A Guide to Industry-Academia
Collaboration Agreements

Key points for researchers at universities and research institutions when contracting with companies.

This content is intended for a Japanese audience. Please refer to the original Japanese text for accuracy as this has been machine-translated. Foreign companies doing business in Japan will need support from Japanese-speaking staff due to local language requirements and business practices.

1. Introduction
2. Non-Disclosure Agreement (NDA)
3. Joint Research Agreement
4. Joint Application Agreement
5. License Agreement
6. Intellectual Property (IP)
7. Reference Materials
8. Collaborating with the TLO

1. Introduction

Collaboration with companies is essential for the social implementation of research outcomes. However, there are fundamental differences in the positions and interests between academia, which emphasizes the publication of results, and companies, which aim for exclusive use in their business.

	University	Company
Nature of Institution	Non-profit	For-profit
Purpose of Joint Research	Academic research	Business promotion
Intellectual Property (IP)	Request for royalties Desire to license to others	Prefers royalty-free Restricts licensing to others
Confidentiality & Publication	Confidentiality is difficult Desire to publish papers	Confidentiality is crucial Publication is not a priority

It is important to understand this conflicting structure and approach negotiations based on this guide to avoid disadvantageous agreements for academia.

2. Non-Disclosure Agreement (NDA)

An agreement signed before full-scale collaborations like joint research, to exchange and discuss technical information from both parties.

Key Points for Academics (Researchers)
Balance Risks and Returns: University information, such as pre-publication data, can lead to significant disadvantages if leaked. Be cautious, as some companies (e.g., in pharmaceuticals) often conduct initial evaluations without an NDA. Limit the Definition of Confidential Information: Negotiate to limit confidential information to only what is explicitly marked (e.g., with "Confidential"), clarifying the scope of what needs to be managed. Avoid Information Contamination: There's a risk that company information will mix with your own knowledge, restricting your research. Avoid receiving unnecessary information. Clarify the Purpose: Specifically define the purpose for which confidential information can be used to reduce the risk of misuse. Beware of Confidentiality Period and Auto-Renewal: Avoid unnecessarily long periods, which increase the risk of accidental leaks. Auto-renewal clauses can also heighten this risk. Ensure Thorough Information Management: Received confidential information must be strictly managed at the lab level, such as by storing it in separate disks or folders from your own information. Promptly Return or Destroy Information After Termination: Continuing to hold onto information only increases the risk of leaks with no benefit.

Key Points for Academics (Researchers)

Balance Risks and Returns: University information, such as pre-publication data, can lead to significant disadvantages if leaked. Be cautious, as some companies (e.g., in pharmaceuticals) often conduct initial evaluations without an NDA.
Limit the Definition of Confidential Information: Negotiate to limit confidential information to only what is explicitly marked (e.g., with "Confidential"), clarifying the scope of what needs to be managed.
Avoid Information Contamination: There's a risk that company information will mix with your own knowledge, restricting your research. Avoid receiving unnecessary information.
Clarify the Purpose: Specifically define the purpose for which confidential information can be used to reduce the risk of misuse.
Beware of Confidentiality Period and Auto-Renewal: Avoid unnecessarily long periods, which increase the risk of accidental leaks. Auto-renewal clauses can also heighten this risk.
Ensure Thorough Information Management: Received confidential information must be strictly managed at the lab level, such as by storing it in separate disks or folders from your own information.
Promptly Return or Destroy Information After Termination: Continuing to hold onto information only increases the risk of leaks with no benefit.

3. Joint Research Agreement

This is the core agreement in industry-academia collaboration, defining the research purpose, content, duration, costs, and handling of outcomes when conducting R&D with a company.

Key Points for Academics (Researchers)
Reflect the "Value of Knowledge" in Research Costs: Negotiate to properly account not just for direct costs (like materials), but also for researchers' intellectual contributions and strategic expenses that support the university's collaboration activities. Clarify IP Rights Ownership: Specifically define the ownership share of jointly created inventions (shared patents), cost allocation, the scope of licensing rights to the company, and procedures if the company chooses not to exploit the patent. Establish Rules for Publishing Research Results: Set reasonable terms for notifying the company before publishing papers and for the period the company can request a delay for patent filing, ensuring it doesn't hinder academic activities. Specify the Research Plan: Clearly defining the research content and division of roles helps prevent future troubles and serves as a basis for determining inventorship. Create and Agree on a Final Report: It is crucial to create a mutually confirmed final report to clarify the scope of research outcomes and prevent disputes. Daily record-keeping in research notebooks is recommended for this. Give Special Consideration to Student Participation: Students are not university employees and cannot be subjected to excessive obligations. Their free will must be respected, while obtaining the minimum necessary consent (e.g., confidentiality, assignment of inventions to the university) to fulfill the contract with the company.

Key Points for Academics (Researchers)

Reflect the "Value of Knowledge" in Research Costs: Negotiate to properly account not just for direct costs (like materials), but also for researchers' intellectual contributions and strategic expenses that support the university's collaboration activities.
Clarify IP Rights Ownership: Specifically define the ownership share of jointly created inventions (shared patents), cost allocation, the scope of licensing rights to the company, and procedures if the company chooses not to exploit the patent.
Establish Rules for Publishing Research Results: Set reasonable terms for notifying the company before publishing papers and for the period the company can request a delay for patent filing, ensuring it doesn't hinder academic activities.
Specify the Research Plan: Clearly defining the research content and division of roles helps prevent future troubles and serves as a basis for determining inventorship.
Create and Agree on a Final Report: It is crucial to create a mutually confirmed final report to clarify the scope of research outcomes and prevent disputes. Daily record-keeping in research notebooks is recommended for this.
Give Special Consideration to Student Participation: Students are not university employees and cannot be subjected to excessive obligations. Their free will must be respected, while obtaining the minimum necessary consent (e.g., confidentiality, assignment of inventions to the university) to fulfill the contract with the company.

4. Joint Application Agreement

An agreement that defines procedures, cost-sharing, and ownership shares when a university and a company jointly file a patent for an invention created through joint research.

Key Points for Academics (Researchers)
Ownership Share: It is crucial to establish a fair ownership ratio based on the contribution to the invention. Avoid defaulting to 50:50 without negotiation based on actual contributions. Cost Sharing: Clearly define how costs from application to maintenance (e.g., patent attorney fees, patent office fees) will be divided. Non-Exercise of Rights: Define what happens if the other party does not exercise its rights (e.g., not filing overseas, non-payment of annuities) to avoid the risk of losing the patent. Licensing to Third Parties: A shared patent cannot be licensed to a third party without the other owner's consent. It is desirable to define the conditions under which licensing is permissible.

Key Points for Academics (Researchers)

Ownership Share: It is crucial to establish a fair ownership ratio based on the contribution to the invention. Avoid defaulting to 50:50 without negotiation based on actual contributions.
Cost Sharing: Clearly define how costs from application to maintenance (e.g., patent attorney fees, patent office fees) will be divided.
Non-Exercise of Rights: Define what happens if the other party does not exercise its rights (e.g., not filing overseas, non-payment of annuities) to avoid the risk of losing the patent.
Licensing to Third Parties: A shared patent cannot be licensed to a third party without the other owner's consent. It is desirable to define the conditions under which licensing is permissible.

5. License Agreement

An agreement where the university grants a company a license to use (practice) its intellectual property, such as patents, in its business.

Key Points for Academics (Researchers)
Scope of License: Clearly specify the content of the licensed rights (e.g., patent numbers), duration, and territory. Exclusive vs. Non-Exclusive: Define whether the license is exclusive to one company or non-exclusive (allowing licenses to multiple companies). Exclusive licenses can command higher royalties. License Fees (Royalties): Clarify the calculation method (e.g., percentage of sales, flat fee) and payment terms. It is important to set a fair price commensurate with market value. Handling of Non-Use: To prevent the technology from being "shelved," it is important to include a clause on whether the license can be revoked if the company does not use the patent without a valid reason.

Key Points for Academics (Researchers)

Scope of License: Clearly specify the content of the licensed rights (e.g., patent numbers), duration, and territory.
Exclusive vs. Non-Exclusive: Define whether the license is exclusive to one company or non-exclusive (allowing licenses to multiple companies). Exclusive licenses can command higher royalties.
License Fees (Royalties): Clarify the calculation method (e.g., percentage of sales, flat fee) and payment terms. It is important to set a fair price commensurate with market value.
Handling of Non-Use: To prevent the technology from being "shelved," it is important to include a clause on whether the license can be revoked if the company does not use the patent without a valid reason.

6. Intellectual Property (IP)

In all the agreements discussed so far, the most critical common issue is the handling of "Intellectual Property."

Companies want to exclusively secure research results as intellectual property to maintain a competitive advantage. In contrast, academia desires the freedom to publish results and use them for further research.

It is necessary to always approach contract negotiations with an IP perspective to avoid falling into a disadvantageous situation where the terms are dictated by the company's logic, leading to research restrictions or loss of potential benefits.

7. Reference Materials

Guidelines for Enhancing Joint Research through Industry-Academia-Government Collaboration
METI / MEXT
A comprehensive guideline outlining the basic principles for universities and companies regarding joint research costs and IP handling to qualitatively transform Japan's industry-academia collaboration. https://www.meti.go.jp/policy/innovation_corp/guideline.html
University IP Governance Guidelines
Intellectual Property Strategy Headquarters
Explains the governance system for universities to build and execute IP strategies organization-wide. Useful for understanding a university's IP policy. https://www.kantei.go.jp/jp/singi/titeki2/tyousakai/daigaku_gov/governance_guideline.html
Open Innovation Portal Site
Japan Patent Office (JPO)
A portal site offering comprehensive information useful for industry-academia and startup collaborations, including contract templates, manuals, and case studies. https://www.jpo.go.jp/support/general/open-innovation-portal/index.html
Research on Patent Right Ownership and Licensing in University-Industry Collaborations
Kanto Branch of Japan Patent Attorneys Association (JPAA)
This report summarizes a survey, analysis, and challenges regarding patent ownership and licensing in industry-academia collaborations from the expert perspective of patent attorneys. https://media.jpaa-kanto.jp/sangakurenkeitokkyoken/

8. Collaborating with the TLO

Researchers Should Not Negotiate Alone

Contract negotiations with companies are led by the industry-academia collaboration division, not by individual researchers. This is because inventions arising from university research are almost always considered "work-for-hire" inventions, with the rights belonging to the university, not the individual inventor.

With government support, the infrastructure of university Technology Licensing Organizations (TLOs) has been rapidly developing. A TLO is a professional group that provides comprehensive support to researchers, from IP strategy and patent filing to social implementation through corporate partnerships.

Frequently consulting with your university's TLO, starting from the patent consultation stage, is the most crucial point for a smooth process.

A Guide to Industry-AcademiaCollaboration Agreements

Table of Contents

1. Introduction

2. Non-Disclosure Agreement (NDA)

3. Joint Research Agreement

4. Joint Application Agreement

5. License Agreement

6. Intellectual Property (IP)

7. Reference Materials

8. Collaborating with the TLO

Researchers Should Not Negotiate Alone

A Guide to Industry-Academia
Collaboration Agreements